An Inter Partes Review Practice Tip

Scott Daniels | January 23, 2013

The Patent Office has a policy of granting pro hac vice permission to individual lawyers, who are not members of the agency’s Patent Bar, to participate in particular inter partes review proceedings.  Such “litigation lawyers” are needed to help address the litigation aspects of inter partes review practice: motions, discovery, etc.

But how many pro hac vice lawyers does a party need?  The answer, we learned last Thursday from the APJs in Apotex v. Alcon, IPR2013-00012, is two.  The Patent Owner Alcon had moved for the admission of five lawyers, but the APJs denied that motion, asking Alcon to identify the two of those lawyers that it really wants.

The APJs’ order might not seem noteworthy, but it does reflect their firm intent to maintain limits on inter partes review cases so that they not expand into District Court-scale proceedings.

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